Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  March 01, 2021

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

SUMMARY OF ISSUES:

• Identification of Goods—Amendment Required

 

IDENTIFICATION OF GOODS—AMENDMENT REQUIRED

 

The identification of goods is indefinite and must be clarified for the reasons set forth below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  

 

The wording “software and hardware for use in navigation or for use in GPS” is unacceptable as indefinite because applicant must specify whether the software is downloadable or recorded for it to be classified in Class 9.  If the software is provided as an online non-downloadable software services, it must be reclassified in Class 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  See suggested amendment below.

 

Class 9

 

Monitoring devices not for medical purposes used to monitor body movements and speed; GPS tracking devices; monitoring devices for calculating, monitoring, recording or displaying physical activity levels, and/or physical inactivity periods, and/or steps walked or ran, and/or distances covered in exercise, and/or exercise levels achieved compared with exercise level goals, and/or calories burned, and/or exercise goal levels based on past exercise, and/or the quality of rest and sleep patterns; apparatus or instruments for calculating, monitoring, tracking, recording or display purposes, namely, activity trackers; devices incorporating a horological function and being used for calculating, monitoring, recording or displaying physical activity levels, and/or physical inactivity periods, and/or steps walked or ran, and/or distances covered in exercise, and/or exercise levels achieved compared with exercise level goals, and/or calories burned, and/or exercise goal levels based on past exercise, and/or the quality of rest and sleep patterns, namely, activity trackers; apparatus or instruments incorporating a horological function for calculating, monitoring, tracking, recording or display purposes, namely, activity trackers; Wearable digital electronic devices in the form of a wrist smartwatch for providing software and display screens for viewing, sending and receiving texts, emails, data and information; electronic devices in the form of a wristband or bracelet incorporating a display screen and/or software for viewing, sending and/or receiving texts, emails, data or other information, namely, activity trackers; Global Positioning Systems (GPS); {specify recorded or downloadable}________________ software and hardware for use in navigation or for use in GPS; GPS incorporating a watch, GPS incorporating watches or horologic instruments; GPS incorporating watches or horologic instruments; and parts of and fittings for the aforesaid goods.

 

Class 10 (acceptable as filed)

 

Monitoring devices for medical purposes for calculating, monitoring, recording or displaying physical activity levels, and/or physical inactivity periods, and/or steps walked or ran, and/or distances covered in exercise, and/or exercise levels achieved compared with exercise level goals, and/or calories burned, and/or exercise goal levels based on past exercise, and/or the quality of rest and sleep patterns; apparatus or instruments for medical purposes for calculating, monitoring, tracking, recording or display purposes, namely, heart rate monitors (HRM); devices for medical purposes incorporating a horological function and being for calculating, monitoring, recording or displaying physical activity levels, and/or physical inactivity periods, and/or steps walked or ran, and/or distances covered in exercise, and/or exercise levels achieved compared with exercise level goals, and/or calories burned, and/or exercise goal levels based on past exercise, and/or the quality of rest and sleep patterns, namely, heart rate monitors; apparatus or instruments for medical use for calculating, monitoring, tracking, recording or display purposes, namely, heart rate monitors; and parts and fittings for all the aforesaid goods

 

Class 14 (acceptable as filed)

 

Watches incorporating a Global Positioning System (GPS) or incorporating a GPS function; watches incorporating software and display screens for viewing, sending and receiving texts, emails, data and information; horologic instruments incorporating a Global Positioning System (GPS); watches incorporating a GPS; parts and fittings for all the aforesaid

 

Class 42 (added class)

 

Online non-downloadable software for use in navigation and GPS

 

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to International Classes 9, 10, 14, and 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

Descriptions of goods and/or services found acceptable in earlier-filed applications and registrations do not always remain acceptable when adopted in later-filed applications.  See TMEP §§702.03(a)(iv), 1402.14.  Identifications of goods and/or services are examined in accordance with the Trademark Rules of Practice and the USPTO’s policies and procedures in effect on the date an application is filed (although an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed).  See 37 C.F.R. §2.85(e)(1)-(e)(2); TMEP §§1401.09, 1402.14. 

 

The USPTO’s rules and policies with respect to identifications of goods and/or services are updated periodically to reflect changes in the marketplace and technology as well as changes to the international classification system.  See TMEP §1402.14.  For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least four classes; however, applicant submitted a fee(s) sufficient for only three class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

Response guidelines.  For this application to proceed, applicant must explicitly address the requirement(s) in this Office action, setting forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Michael FitzSimons/

Michael FitzSimons

Trademark Examining Attorney

Law Office 103

(571) 272-0619

michael.fitzsimons@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 01, 2021 for

U.S. Trademark Application Serial No. 90206376

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Michael FitzSimons/

Michael FitzSimons

Trademark Examining Attorney

Law Office 103

(571) 272-0619

michael.fitzsimons@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 01, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”